`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`SHOPIFY, INC.,
`Petitioner
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner
`
`
`Case IPR2018-01008
`U.S. Patent 9,639,876
`
`Case IPR2018-01009
`U.S. Patent 9,043,228
`
`Case IPR2018-01010
`U.S. Patent 8,515,825
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`

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`Page i Case Nos. IPR2018-01008, 09, 10
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
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`TABLE OF CONTENTS
`Issues addressed ......................................................................................................... 1
`
`Argument.................................................................................................................... 2
`
`I. Overview of DDR patents, challenged claims, and file histories. ....................... 2
`
`II. The Petitions offer no reason why the InfoHaus art in these Petitions are
`
`non-duplicative of the Digital River art in the other Petitions, which the
`
`examiner addressed. ................................................................................................... 9
`
`III. None of the references disclose corresponding “overall appearance”
`
`between a host and an outsource provider page, as claimed. .................................. 14
`
`A. Construction of key terms. ............................................................................. 15
`
`1. “Merchant” ..................................................................................................15
`
`2. “Commerce object” .....................................................................................16
`
`3. “Outsource provider” ..................................................................................18
`
`4. “Host/owner” ...............................................................................................18
`
`B. Ground 1: Loshin does not anticipate the claims. .......................................... 19
`
`1. The Petitions fail to show that the “page pair” shown in Loshin meets the
`
`claim language. ..........................................................................................20
`
`2. The Petitions fail to show Loshin teaching visual correspondence of
`
`“overall appearance.” ................................................................................24
`
`3. The Petitions fail to show anticipation by Loshin. ......................................29
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`

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`Page ii Case Nos. IPR2018-01008, 09, 10
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`C. Ground 2: Adding the “InfoHaus Documents” does not address the
`
`claim limitations missing from Loshin........................................................ 29
`
`D. Ground 3: The combination of Moore and Loshin does not obviate the
`
`claims. .......................................................................................................... 32
`
`IV. The Board should not institute an IPR proceeding. ........................................... 36
`
`
`
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`

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`Page iii Case Nos. IPR2018-01008, 09, 10
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`
`TABLE OF AUTHORITIES
`Cases
`Becton Dickinson & Co. v. B. Braun Mesungen AG, IPR2017-01586, Paper
`8 (Bd. App. Dec. 15, 2017) (informative) ............................................................13
`Canon Inc. v. Intellectual Ventures I LLC, IPR2014-00535, Paper 9 (Bd.
`App. Sept. 24, 2014) .............................................................................................13
`Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991) ........28
`Corelogic, Inc. v. Boundary Solutions, Inc., IPR2015-00219, Paper 6 (Bd.
`App. May 21, 2015) ..............................................................................................13
`Cultec, Inc. v. StormTech LLC, IPR2017-00777, Paper No. 7 (Bd. App. Aug.
`22, 2017) (informative) .........................................................................................14
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) ..... passim
`DDR Holdings, LLC v. Hotels.com, L.P., 954 F. Supp. 2d 509 (E.D. Tex.
`2013) ....................................................................................................................... 2
`Ex parte Clapp, 227 USPQ 972 (Bd. Pat. App. & Interf. 1985) .............................31
`Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356 (Fed. Cir. 2016) ........................... 9
`Hospira, Inc. v. Genentech, Inc., IPR2017-00739, Paper No. 16 (Bd. App.
`July 27, 2017) ........................................................................................................29
`Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Paper 8 (Bd. App. Sept.
`11, 2014) ...............................................................................................................13
`Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628 (Fed. Cir.
`1987) .....................................................................................................................28
`Statutes
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 314(a) ...................................................................................... 1, 2, 9, 29
`35 U.S.C. § 325(d) .................................................................................... 1, 9, 14, 29
`Other Authorities
`37 C.F.R. § 42.107(b) ................................................................................................ 1
`Rules
`MPEP 2131 ..............................................................................................................28
`MPEP 2131.01(III) ...................................................................................................28
`MPEP 706.02(j) .......................................................................................................32
`Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ............................. 29, 32
`
`

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`Page iv Case Nos. IPR2018-01008, 09, 10
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`
`Description
`
`TABLE OF EXHIBITS
`Ex. No.
`2001 U.S. Patent 6,993,572
`2002 U.S. Patent 7,818,399
`2003 D. Del. decision denying motion to dismiss
`2004
`File history of S.N. 12/906,979 (issued as U.S. Patent 8,515,825)
`2005
`File history of S.N. 13/970,515 (issued as U.S. Patent 9,043,228)
`2006
`File history of S.N. 14/719,009 (issued as U.S. Patent 9,639,876)
`2007
`[Reserved]
`2008
`[Reserved]
`2009
`[Reserved]
`2010
`[Reserved]
`2011
`[Reserved]
`2012 Memorandum Opinion and Order denying JMOL and new trial motions,
`Case No. 2:06-CV-00042-DF-CMC, June 20, 2013
`2013
`[Reserved]
`[Reserved]
`2014
`2015 Claim Construction Order, Case No. 2:06-CV-00042-DF-CMC,
`November 21, 2011
`2016
`[Reserved]
`2017 Opinion & Order denying Digital River’s Motion for Summary
`Judgment, Case No. 2:06-CV-00042-DF-CMC, October 3, 2012
`[Reserved]
`[Reserved]
`[Reserved]
`[Reserved]
`[Reserved]
`Letter from Shopify counsel
`
`2018
`2019
`2020
`2021
`2022
`2023
`
`

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`Page 1 Case Nos. IPR2018-01008, 09, 10
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`
`Issues addressed
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(b), Patent Owner
`
`presents this Consolidated Preliminary Response to demonstrate that the Board
`
`should not institute an Inter Partes Review (“IPR”) on any of these three Petitions,
`
`which address three related patents (U.S. Patent 9,639,876 is a continuation of U.S.
`
`Patent 9,043,228, which is a continuation of U.S. Patent 8,515,825) and which urge
`
`identical “grounds” for invalidation, using the same exhibits and exhibit numbers.
`
`Because the issues are so related, copies of this Consolidated Preliminary
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`Response is being filed in all three case numbers, in identical form, so the Board
`
`need not worry about reading multiple versions. Three other Petitions, filed by the
`
`same Petitioner at the same time, offer different grounds to invalidate the same
`
`three patents, Patent Owner responds to those in a separate consolidated paper.
`
`This paper shows why the Board should not institute any of the IPRs for
`
`either of two reasons:
`
`1.
`
`These Petitions propose “grounds” in material respects duplicative (or
`
`less relevant) than the “grounds” proposed on the other set of Petitions, which in
`
`turn rely on the most significant references considered by the examiner during
`
`original prosecution. Because the Petitions do not even try to explain why the
`
`grounds are not “substantially the same,” the Board should deny institution under
`
`35 U.S.C. §§ 314(a) or 325(d).
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`Page 2 Case Nos. IPR2018-01008, 09, 10
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`The Petitions fail to meet the burden of showing “a reasonable
`
`2.
`
`likelihood that the petitioner would prevail” (35 U.S.C. § 314(a)) in demonstrating
`
`that the challenged patent claims are anticipated or obvious, because the Petitions
`
`fail to demonstrate that any of the relied-upon references disclose at least one key
`
`limitation of the inventions defined by each challenged independent claim.
`
`Because the situation is so clear, Patent Owner does not address the Petitions’
`
`challenges to other elements or dependent claims (but reserves the right to do so).
`
`Argument
`
`I.
`
`Overview of DDR patents, challenged claims, and file histories.
`
`The challenged patents are continuations of a parent patent (U.S. Patent
`
`7,818,399, Ex. 2002) that survived a hotly contested multi-party trial and appeal to
`
`the Federal Circuit, yielding an often-cited decision on 35 U.S.C. § 101. DDR
`
`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir. 2014).
`
`The first of the three patents challenged here issued after DDR won the
`
`district court trial in connection with both the parent and a grandparent patent (U.S.
`
`Patent 6,993,572, Ex. 2001) having the same specification, and after the examiner
`
`considered all prior art cited by six independent defendants in that case. DDR
`
`Holdings, LLC v. Hotels.com, L.P., 954 F. Supp. 2d 509 (E.D. Tex. 2013) (Ex.
`
`2012). The second of the challenged patents issued after and as a result of DDR’s
`
`2014 win defending the parent patent on appeal. The third patent issued last year.
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`

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`Page 3 Case Nos. IPR2018-01008, 09, 10
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`All five of the patents – the three challenged here, the parent ‘399 patent,
`
`and the grandparent ‘572 patent – share a common specification, originally filed on
`
`September 17, 1999.1 This preliminary response cites the specification of the
`
`parent ‘399 patent, Ex. 2002, which is the one discussed by the Federal Circuit.
`
`All five of these related DDR patents refer to a claimed system and method
`
`designed to improve on known “affiliate programs.” See, e.g., parent ‘399 patent,
`
`2:12-53. Affiliate programs involve a “host” computer that in effect advertises a
`
`product sold by a third-party merchant (e.g., Amazon.com, id., 2:30), thus helping
`
`the merchant sell product, in exchange for compensation. The patent claims thus
`
`refer to an “outsource provider” between the “host” (e.g., affiliate) and a
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`“merchant” selling product. The patent claims clarify that, despite selling a
`
`merchant’s product elsewhere, visual elements of a host’s website remain visible to
`
`the consumer. The “outsource provider” facilitates that result.
`
`More specifically: The challenged independent claims refer to apparatus and
`
`methods using an “outsource provider” server that, in response to selection of a
`
`URL on a “source” web page, serves automatically (see ‘825 Patent, claim 1, part
`
`(b)) a generated “composite web page” containing (i) information related to a
`
`merchant’s product and (ii) “visually perceptible elements” that “visually
`
`1 There is an earlier provisional, filed September 17, 1998, which provides a
`priority date for most claims, including all independent claims, but explicit
`comparison of the provisional and regular specifications is not needed for purposes
`of this preliminary response.
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`Page 4 Case Nos. IPR2018-01008, 09, 10
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`correspond[] to the source web page” (‘825 Patent, claim 1, part (ii)). Parallels to
`
`these core limitations appear in each of the other challenged independent claims,
`
`‘825 Patent, claim 11 (apparatus counterpart), ‘825 Patent, claim 17 (method claim
`
`with added limitation about “instructions direct[ing] the visitor computer to
`
`download data defining the visually perceptible elements”), ‘228 Patent, claim 1
`
`(specifies types of “elements”), ‘228 Patent, claim 9 (apparatus counterpart), ‘876
`
`Patent, claim 1 (serving instructions to cause the visitor computer to display the
`
`page), ‘876 Patent, claim 11 (apparatus counterpart).
`
`As the Federal Circuit found in determining that the claims of the parent
`
`‘399 patent contained an “inventive concept”: “[T]he claims at issue here specify
`
`how interactions with the Internet are manipulated to yield a desired result—a
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`result that overrides the routine and conventional sequence of events ordinarily
`
`triggered by the click of a hyperlink. Instead of the computer network operating in
`
`its normal, expected manner by sending the website visitor to the third-party
`
`website that appears to be connected with the clicked advertisement, the claimed
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`system generates and directs the visitor to the above-described hybrid web page
`
`that presents product information from the third-party and visual ‘look and feel’
`
`elements from the host website.” DDR, 773 F.3d at 1258-59 (Fed. Cir. 2014).
`
`The Federal Circuit noted that the invention was designed to solve a problem
`
`with prior art Internet-based techniques applicable to affiliate programs: The “loss
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`Page 5 Case Nos. IPR2018-01008, 09, 10
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`of eyeballs” when a person switched away from a host website participating in a
`
`standard affiliate program: “The [parent ’399 patent’s] claims address the problem
`
`of retaining website visitors that, if adhering to the routine, conventional
`
`functioning of Internet hyperlink protocol, would be instantly transported away
`
`from a host’s website after ‘clicking’ on an advertisement and activating a
`
`hyperlink.” DDR, 773 F.3d at 1257.
`
`The Federal Circuit also held that “these claims stand apart because they do
`
`not merely recite the performance of some business practice known from the pre-
`
`Internet world along with the requirement to perform it on the Internet.” 773 F.3d
`
`at 1257. Non-Internet concepts “did not have to account for the ephemeral nature
`
`of an Internet ‘location’ or the near-instantaneous transport between these locations
`
`made possible by standard Internet communication protocols, which introduces a
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`problem that does not arise in the ‘brick and mortar’ context.” 773 F.3d at 1258.
`
`Recently, in the course of denying Petitioner’s motion to dismiss on Section
`
`101 grounds, a district court held that the same “inventive concept” found by the
`
`Federal Circuit with respect to the parent ‘399 patent equally applies to the three
`
`patents challenged by these Petitions. Ex. 2003.
`
`All five of the related DDR patents require three parties – namely a “host”
`
`(owner of first web page), a “outsource provider,” and a “merchant” (plus the
`
`customer doing the clicking of course). The parent ‘399 patent’s claims require all
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`

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`Page 6 Case Nos. IPR2018-01008, 09, 10
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`three of those parties to be distinct from one another. The claims of the other four
`
`patents – namely the grandparent ‘572 patent and the three patents at issue here –
`
`require the “outsource provider” to be different from the “host” and also different
`
`from the “merchant,” but the “host” and the “merchant” could be the same entity.
`
`The district court ruled that the claims of the grandparent ‘572 patent could cover a
`
`situation where the “host” and the “merchant” were the same entity. Ex. 2017.
`
`In the same decision addressing Section 101, the Federal Circuit invalidated
`
`certain claims of the grandparent ‘572 patent as anticipated by the primary
`
`reference used in the current Petitions, namely Digital River art.2 DDR, 773 F.3d at
`
`1252-55. The Federal Circuit mainly used this reasoning: “Both the district court
`
`and DDR introduced a limitation found neither in the ‘572 patent’s claims nor the
`
`parties’ stipulated construction. In particular, the district court introduced a
`
`requirement that the generated composite web page have an ‘overall match’ in
`
`appearance with the host website, beyond what is expressly recited by the claims.”
`
`DDR, 773 F.3d at 1254.
`
`However, as shown in the file histories, discussed next, in considering the
`
`applications that issued as the patents challenged here, the examiner decided
`
`explicitly that the arguments that Digital River and its co-defendants had made
`
`against the grandparent ‘572 patent did not apply to these claims. The examiner
`
`2 Digital River itself filed briefs in that appeal, but it settled before oral argument
`by paying the judgment against it and buying an ongoing license from DDR.
`
`

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`Page 7 Case Nos. IPR2018-01008, 09, 10
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`reached this conclusion despite understanding that, like the grandparent ‘572
`
`patent, each of the three applications had claims that could cover a situation where
`
`the “host” and the “merchant” were the same entity.
`
`The file histories of the three patents-at-issue are attached as Exhibits 2004,
`
`2005, and 2006 and discussed more thoroughly in connection with the companion
`
`Patent Owner Consolidated Response relating to the other Petitions (which relate
`
`to Digital River Publications). For purposes here, it is sufficient to refer to the fact
`
`that Patent Owner told the examiner:
`
`The primary distinction argued at trial was that the Digital River art
`
`failed completely to show even one outsourced page where visually
`
`perceptible elements copied from
`
`the host page produced a
`
`substantially similar overall appearance. Digital River carried over
`
`isolated elements from time to time from the host page to an
`
`outsourced page and called that “matching look and feel” (or similar
`
`words) on occasion, but never was there evidence of any matching
`
`overall appearance. Other differences may exist, but given time limits
`
`at trial, the parties to the case focused on this point. The pending
`
`claim includes a “wherein” clause that says, “wherein the plurality of
`
`visually perceptible elements define an overall appearance of the
`
`composite page that, excluding the information associated with the
`
`

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`Page 8 Case Nos. IPR2018-01008, 09, 10
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`commerce object, visually corresponds to the source web page ….”
`
`Ex. 2005 at 150.
`
`Applicant also argued, regarding the appeal decision:
`
`The court invalidated certain claims of the parent ‘572 Patent by
`
`concluding that they did not contain claim language requiring an
`
`“overall match” between the websites…. The above comments are
`
`emphatically not equally applicable to the pending claims…. [T]he
`
`claim
`
`language here expressly
`
`requires overall appearance
`
`correspondence. Id. at 61.
`
`As the examiner concluded, therefore, each of the claims of the three patents
`
`challenged here contain explicit limitations requiring the “overall match” in
`
`appearance that the Federal Circuit held had been lacking from the invalidated
`
`claims of the grandparent ‘572 patent. The ‘825 Patent, independent claim 1 at part
`
`(b)(ii), requires serving a “composite web page” that includes “a plurality of
`
`visually perceptible elements derived from the retrieved pre-stored data defining
`
`an overall appearance of the composite web page that, excluding the information
`
`associated with the commerce object, visually corresponds to the source web page
`
`….” Claim 11 is an independent apparatus counterpart that recites a parallel
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`limitation at part (b)(ii)(B). Independent claim 17 likewise contains a parallel
`
`limitation at part (ii). The same is true for both the ‘228 Patent (see claim 1 at part
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`

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`Page 9 Case Nos. IPR2018-01008, 09, 10
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`U.S. Patents 8,515,825,
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`(ii), second “wherein” clause; claim 9 at same location) and for the ‘876 Patent
`
`(see claim 1: “a composite web page visually corresponding to the source web
`
`page; wherein the visual correspondence relates to overall appearance of the
`
`composite web page as compared to the source web page …”; claim 11 (same)).
`
`These limitations were crucial to the examiner’s patentability decision.
`
`II. The Petitions offer no reason why the InfoHaus art in these Petitions
`
`are non-duplicative of the Digital River art in the other Petitions,
`
`which the examiner addressed.
`
`The Board has discretion whether to institute an IPR. 35 U.S.C. § 314(a).
`
`More specifically, the Board has discretion to deny institution where multiple
`
`petitions are filed against the same patents. 35 U.S.C. § 325(d). The Board should
`
`deny institution under both Section 325(d) and Section 314(a). See Harmonic Inc.
`
`v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted,
`
`but never compelled, to institute an IPR proceeding”). As explained in more detail
`
`below in this section, such discretion is exercised when the relied-upon art appears
`
`cumulative of the art in another petition or “substantially similar” to art considered
`
`during examination, and discretion is particularly exercised when the petition
`
`neglects to argue, or explain, why there is no duplication or cumulativeness.
`
`The grounds in these Petitions are:
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`

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`Page 10 Case Nos. IPR2018-01008, 09, 10
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`1. Alleged anticipation by “Loshin,” Ex. 1003, a manual describing how
`
`to use the “InfoHaus” product offered by “First Virtual Holdings, Inc.”
`
`2. Alleged obviousness over Loshin in view of three “InfoHaus
`
`Documents,” Ex. 1004-06, which likewise are publications describing the First
`
`Virtual InfoHaus system.
`
`3. Alleged obviousness over Loshin in view of Moore, Ex. 1010.
`
`The grounds in the companion Petitions, IPR2018-01011, -12, & -14, are:
`
`1. Alleged obviousness by the Digital River Publications, Exs. 1004-06
`
`(to the other Petitions). Even though the Petitions present the Digital River
`
`Publications as an obviousness argument, rather than an anticipation argument,
`
`the use of obviousness appears to stem merely from the need to combine
`
`multiple Digital River documents. The Petitions contend that those publications
`
`collectively contain each element of every challenged claim.
`
`2. Alleged anticipation by Moore, Ex. 1010.
`
`3. Alleged obviousness by Moore in view of Arnold, Ex. 1011.
`
`4. Alleged obviousness by Moore in view of Digital River Publications.
`
`The section of these Petitions (§IV.B.2) entitled “The Asserted Grounds are
`
`not Cumulative” very briefly explains why, allegedly, the three grounds in these
`
`Petitions are not duplicative of one another, but they contain not one word of
`
`explanation concerning duplication between the InfoHaus-related art (Loshin and
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`

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`Page 11 Case Nos. IPR2018-01008, 09, 10
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`the InfoHaus Publications) and the Digital River-related Publications in the other
`
`Petitions. Conversely, in the other Petitions, the parallel section addresses internal
`
`duplication but does not compare to these InfoHaus-related Petitions.
`
`In all material respects, grounds 1 and 2 of these Petitions present art
`
`(Loshin and the InfoHaus Publications) that are cumulative of – or disclose less
`
`than – the Digital River Publications in ground 1 of the other Petitions. Ground 3
`
`of these Petitions (Loshin/Moore) present a combination that is likewise no better
`
`than cumulative of ground 4 of the other Petitions (Digital River/Moore).
`
`The following points of similarity exist:
`
`1. Like the Digital River Publications, the InfoHaus-related references
`
`are printed publications related to commercial products, not U.S. Patents.
`
`2. Both sets of publications deal with situations where the host is also a
`
`merchant, what the Petitions call “a two-party system.”
`
`3. Both sets of publications date from the same time period. These
`
`Petitions (§IV.B.2) date Loshin from 1996 and the InfoHaus Documents from
`
`1997. The other Petitions date the Digital River Publications from 1997. The
`
`Petitions do not assert that Patent Owner can “swear behind” one set of
`
`references but not the others.
`
`4. The Petitions combine both sets of publications with the same
`
`reference, Moore, in an alleged obviousness combination. The Petitions do not
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`identify any different rationale for how Moore combines with the two sets of
`
`printed publication references.
`
`5. These Petitions do not assert that the InfoHaus-related references
`
`contain any claim element missing from the Digital River Publications
`
`addressed by the other Petitions.
`
`6. These Petitions do not identify any distinction that the examiner used
`
`to distinguish the Digital River Publications during prosecution but that would
`
`not seem to apply to the InfoHaus-related references.
`
`7. These Petitions do not identify any argument that Patent Owner might
`
`make as to the Digital River Publications that cannot be made for InfoHaus-
`
`related references.
`
`The InfoHaus-related references, indeed, appear to disclose less than the
`
`Digital River Publications in at least one respect. As explained further below, the
`
`Digital River Publications describe a system whereby Digital River would serve
`
`commerce pages upon activation of a link on a separate “host” website, whereas
`
`the InfoHaus Publications do not appear to discuss that feature. Instead, as shown
`
`below, the InfoHaus Publications discuss a self-contained “mall-type” system and
`
`do not discuss in-bound links from external websites.
`
`Under the guidance that the PTO has issued pertaining to exercise of its
`
`discretion, these Petitions provide a prime case for denying institution because they
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`

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`Page 13 Case Nos. IPR2018-01008, 09, 10
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`present references cumulative to those in co-filed petitions, and without
`
`explanation. Canon Inc. v. Intellectual Ventures I LLC, IPR2014-00535, Paper 9 at
`
`19-20 (Bd. App. Sept. 24, 2014) (denying institution on discretionary grounds:
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`“Petitioner, however, does not address the duplicative nature of its arguments
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`across Petitions”; no showing that grounds based on alternate references “add
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`substantively” to the grounds based on references in another proceeding);
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`Corelogic, Inc. v. Boundary Solutions, Inc., IPR2015-00219, Paper 6 at 11-12 (Bd.
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`App. May 21, 2015) (denying institution on discretionary grounds: “Petitioner
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`makes no attempt to distinguish the grounds asserted against the claims of [this]
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`patent in this case from those asserted in [two other petitions filed the same day]”;
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`no showing that “additional obviousness grounds asserted in this case … add
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`substantively to the obviousness grounds” in the other cases); Medtronic, Inc. v.
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`Nuvasive, Inc., IPR2014-00487, Paper 8 at 6 (Bd. App. Sept. 11, 2014) (denying
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`institution on discretionary grounds: “While Petitioner argues that the grounds are
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`not redundant to those instituted on in the ’506 Proceeding, Petitioner does not
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`provide any specific reasoning to support that argument, other than to state that the
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`grounds are based on different prior art references.”); see also Becton Dickinson &
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`Co. v. B. Braun Mesungen AG, IPR2017-01586, Paper 8 at 17-18 (Bd. App. Dec.
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`15, 2017) (informative) ( “In evaluating whether to exercise our discretion when
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`the same or substantially the same prior art or arguments previously were
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`

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`Page 14 Case Nos. IPR2018-01008, 09, 10
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`presented to the Office under section 325(d), we have weighed some common non-
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`exclusive factors, such as: (a) the similarities and material differences between the
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`asserted art and the prior art involved during examination; (b) the cumulative
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`nature of the asserted art and the prior art evaluated during examination …”);
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`Cultec, Inc. v. StormTech LLC, IPR2017-00777, Paper No. 7 at 12-13 (Bd. App.
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`Aug. 22, 2017) (informative) (denying institution on discretionary grounds: even
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`though petition relied on some references not reviewed by the examiner, those
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`“new” references taught “substantially the same” features as those cited during
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`prosecution).
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`III. None of the references disclose corresponding “overall appearance”
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`between a host and an outsource provider page, as claimed.
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`If the Board decides to consider these Petitions’ specific arguments, study of
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`the references applied to the independent claims (Loshin, InfoHaus Publications,
`
`and Moore) demonstrates that the Petitions have failed to show that the various
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`combinations recited in the different “grounds” meet key limitations of the
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`independent claims. Construction of certain claim terms are discussed first,
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`followed by the key distinctions applicable to all of the different “grounds.”
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`

`

`Page 15 Case Nos. IPR2018-01008, 09, 10
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`A. Construction of key terms.
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`
`The Petitions (§V.B) ask the Board to construe only three terms of the
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`independent claims: “merchant,” “host,” and “commerce object.”3 As explained in
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`the summary (Part I) above, both the grandparent ‘572 patent and all three of the
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`patents-at-issue require “three parties” – namely a “host” (owner of first web
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`page), a “outsource provider,” and a “merchant.” All challenged claims – again
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`like the grandparent ‘572 patent – refer to an outsource provider server, which is a
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`computer system that arranges presentation of a composite page on user browsers
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`upon activation of a link (URL) on a third-party “host” source webpage, which link
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`relates to a “commerce object” that leads to information about a product of a
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`“merchant” available for sale, where the “merchant” is also a third party to the
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`“outsource provider.”
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`With that background, Patent Owner asks the Board to construe the
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`following terms and adopt the following constructions.
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`1.
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` “Merchant”
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`The district court construed “merchant” as: “Producer, distributor, or reseller
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`of goods or services to be sold.” Ex. 2015 at 10.
`
`
`3 A fourth term, “commission,” relates to a few dependent claims only, so Patent
`Owner asks the Board to hold that construction in abeyance, given that Patent
`Owner is not arguing dependent claims separately.
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`

`

`Page 16 Case Nos. IPR2018-01008, 09, 10
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`U.S. Patents 8,515,825,
`9,043,228 & 9,639,876
`The Petition-proposed definition of “merchant” (§V.B.1) recommends
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`adding “through the outsource provider.”
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`The Board should adopt the court-ordered construction. The court definition
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`is broader and not unreasonable. Also, omitting reference to “outsource provider”
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`when defining “merchant” avoids circularity (where “merchant” refers to
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`“outsource provider” and vice versa).
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`The Board agreed with this interpretation in the recent Decision Instituting
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`IPR2018-00482.4
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`2.
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` “Commerce object”
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`In reexamination of the grandparent ‘572 patent (obviously before the
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`Federal Circuit invalidated some of its claims), the Board agreed with Patent
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`Owner that “a commerce object is defined as a product of a third-party merchant,
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`not a product sold by the owner of the linked page.” Ex. 1018 at 12-13 (“We agree
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`with Appellant”).
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`
`4 The Board recently (August 2) instituted an IPR in response to a Petition by a
`different Petitioner challenging the parent ‘399 patent. Id. at Paper 18. The
`decision did not find sufficient basis to institute in connection with a proposed
`combination of the Digital River Publications and Arnold, but instituted
`nonetheless in view of a second ground relying on the combination of Moore and
`Voorhees. Id. Because the claims of the parent ‘399 patent differ from those at
`issue here in material respects, because the arguments made here differ, and
`because Voorhees is not cited in these petitions, the decision to institute there does
`not necessitate institution here.
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